Appeal No. 1997-3897 Page 6
Application No. 08/458,930
to fill the gaps. The references themselves must provide some
teaching whereby the appellants' combination would have been
obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991) (citations omitted).
As set forth above, teachings of references can be
combined only if there is some suggestion or incentive to do
so. Here, the prior art contains none. The disparate
teachings of the applied prior art (i.e., Norris, Carpenter,
Hackler and Thompson) and the manner in which they are
proposed to be combined (answer, pp. 4-7) indicate, in our
view, that the examiner has engaged in an impermissible
hindsight reconstruction of the appellants' invention using
the claims as a template to selectively piece together
isolated disclosures in the prior art. Thus, we find
ourselves in agreement with the appellants' position (brief,
pp. 11-12) that the applied prior art (1) does not suggest or
teach any benefit from using all nylon 6 materials; (2)
presents a myriad of teachings that would not have led one
skilled in the art to the claimed invention; and (3) is devoid
of any guidance to combine the prior art to arrive at the
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